DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1, 3-26 and 31-35 are currently under examination. Claims 2 and 27-30 have been cancelled. Claims 31-35 are newly added. Claim 1 is amended.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as being anticipated by Tran et al. (US 6,309,532 B1, applicants submitted in IDS) with respect to claims 1-26 is withdrawn. Among them, claim 2 has been cancelled.
New grounds of rejections are set forth below.
New Grounds of Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 31 and 34-35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In this case, claims 31 and 33 contain subject matter of “a carbon material of the carbonaceous electrode has a low surface area of less than 5 square meters per gram.” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claimed ranges encompasses the ranges disclosed in the instant specification.
Claims 34-35 depend directly or indirectly from the rejected claim 33 and are, therefore, also rejected under 35 USC § 112(a) for the reasons set forth above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-26 and 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over Tran et al. (US 6,309,532 B1, applicants submitted in IDS).
Regarding claim 1, Tran et al. teach a chemical regeneration method for removing metal deposited on the surface of the carbon electrode (the claimed carbonaceous electrode) comprising the use of chemical regeneration solution containing a strong acid such as H2SO4 (applicant’s elected and claimed an acid).
In one embodiment, a strong chemical oxidant such hydrogen peroxide (applicant’s elected and claimed oxidizing agent) to oxidizing the metal, collecting metal oxide, thereby regenerating the electrode product (col. 24, lines 37-60, col.26, lines 50-54, col. 38, line 51, col.32, lines 60-62, and col. 39, lines 5-14).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine an strong acid and hydrogen peroxide to obtain the invention as specified in the claim 1, in particular view MPEP 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (in this case used as a complexing agent).... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980)”
The phrase of "a carbonaceous electrode of an electrochemical device.” recites in claim 1 interpreted as intended use.
Per MPEP 2111, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Since the reference of Tran et al. teaches the same method for removing a metal from a surface of a carbonaceous electrode as the instant claim, the resulting carbonaceous electrode would expect to be capable of applying to an electrochemical device as per applicant claim 1. Therefore it meets the claim limitations.
Regarding claims 3-6, as discussed above, the references of Tran et al. teach regeneration solution comprising H2SO4 (applicant’s elected and claimed an acid) and hydrogen peroxide (applicant’s elected and claimed oxidizing agent) as the instant claims.
Regarding claim 7, Tran et al. teach the use of chelating agents such as EDTA as the instant claim (col. 24, lines 45-47).
Regarding claim 8, Tran et al. teach a carbon cloth and film as the instant claim (col. 9, line 63, col. 34, line 58).
Regarding claim 9, Tran et al. teach electrode stack as the instant claim (FIG. 1, 3 and 7).
Regarding claim 10, Tran et al. teach membrane as the instant claim (co. 6, line 26-42, col. 10, lines 9-).
Regarding claims 11 and 16, Tran et al. teach ion exchange as the instant claim (Col. 5, line 42, FIG. 22, col. 24, lines 27-28).
Regarding claim 12, Tran et al. teach bipolar electrode as the instant claim (Col. 5, line 42, FIG. 22).
Regarding claims 13 and 17, Tran et al. teach thin sheets and tin film of carbonaceous electrode as the instant claim (Col. 6, line 67col. 8, line 61, and FIG. 31).
Regarding claims 14-15, Tran et al. teach electrode titanium sheet (col. 9, line 50, col. 13, lines 7-65, and col. 28, lines 57-59).
Regarding claims 18-23, Tran et al. teach electrode titanium sheet severs as both a current collector and a structural support (col. 9, line 50, col. 13, lines 7-65, and col. 28, lines 57-59).
Regarding claims 24-25, Tran et al. teach dielectric separator (col. 23, line 34).
Regarding claim 26, Tran et al. teach dielectric separator by thin sheets of insulating material such as rubber (col. 10, lines 40-60 and col. 23, line 34).
Regarding claim 31, as discussed above, the carbonaceous electrode taught by Tran et al. is a carbon cloth.
Although Tran et al. do not specifically disclose a carbon material of the carbonaceous electrode has a low surface area <5 M2/gram as per applicant claim 31, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the method containing the same claimed strong acid and oxidant taught by Tran et al. to a carbonaceous electrode with a low surface area <5 m2/g obtain the invention as specified in the claim 31 as an alternative carbonaceous electrode, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
In addition, the optimization of variables, such as a carbonaceous electrode with low surface area <5 M2/gram, in a known process is prima facie obvious.
As evidenced above, Tran et al. teach a process for removing a metal from a surface of any type of surface area of a carbonaceous electrode.
Regarding claim 32, as discussed above, Tran et al. teach a method for removing a metal from a surface of a carbonaceous electrode.
Although Tran et al. do not specifically disclose a reduced metal accumulated on the surface of carbonaceous electrode from being electroplated upon application of an appropriate voltage to the carbonaceous electrode as per applicant claim 32, the optimization of variables, such as a reduced metal on the surface of a carbonaceous electrode, in a known process is prima facie obvious.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the method containing the same claimed strong acid and oxidant taught by Tran et al. to a reduced metal on a surface of a carbonaceous electrode obtain the invention as specified in the claim 32 as an alternative carbonaceous electrode, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Regarding claims 33 and 35, Tran et al. teach a chemical regeneration method for removing metal deposited on the surface of the carbon electrode (the claimed carbonaceous electrode) comprising the use of chemical regeneration solution containing a strong acid such as H2SO4 (applicant’s elected and claimed an acid).
In one embodiment, a strong chemical oxidant such hydrogen peroxide (applicant’s elected and claimed oxidizing agent) to oxidizing the metal, collecting metal oxide, thereby regenerating the electrode product (col. 24, lines 37-60, col.26, lines 50-54, col. 38, line 51, col.32, lines 60-62, and col. 39, lines 5-14).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to combine an strong acid and hydrogen peroxide to obtain the invention as specified in the claim 33, in particular view MPEP 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (in this case used as a complexing agent).... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980)”
Although Tran et al. do not specifically disclose a carbon material of the carbonaceous electrode has a low surface area <5 M2/gram as per applicant claim 33, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the method containing the same claimed strong acid and oxidant taught by Tran et al. to a carbonaceous electrode with a low surface area <5 m2/g obtain the invention as specified in the claim 31 as an alternative carbonaceous electrode, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
In addition, the optimization of variables, such as a carbonaceous electrode with low surface area <5 M2/gram, in a known process is prima facie obvious.
As evidenced above, Tran et al. teach a process for removing a metal from a surface of any type of a carbonaceous electrode.
Regarding claim 34, as discussed above, Tran et al. teach a method for removing a metal from a surface of a carbonaceous electrode.
Although Tran et al. do not specifically disclose a reduced metal accumulated on the surface of carbonaceous electrode from being electroplated upon application of an appropriate voltage to the carbonaceous electrode as per applicant claim 34, the optimization of variables, such as a reduced metal on the surface of a carbonaceous electrode, in a known process is prima facie obvious.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to apply the method containing the same claimed strong acid and oxidant taught by Tran et al. to a reduced metal on a surface of a carbonaceous electrode obtain the invention as specified in the claim 34 as an alternative carbonaceous electrode, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments filed on 03/09/2026 have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Applicant argued Tran et al. fail to disclose or suggest at least a carbon material with a "very high specific surface area" of 600-1000 square meters per gram. (Tran at column 28, lines 62-64.) (Remarks, page 8).
The Office respectfully disagrees. Applicant is reminded that patents are part of the literature of the art, relevant for all they contain, and that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (MPEP2123). Tran et al. do not specifically disclose or suggest the carbon material with only a "very high specific surface area" of 600-1000 square meters per gram.
For the same reason, Tran et al. do not teach away to apply their method to a metal which accumulated on the surface of from being electroplated upon application of an appropriate voltage to the carbonaceous electrode. One of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
As such, the rejection of claim 1 as set forth above is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
YUN . QIAN
Examiner
Art Unit 1738
/YUN QIAN/ Primary Examiner, Art Unit 1738
Prosecution Insights